Patent protection for digital solutions according to DIN77006

© Prof. Dr. Alexander J. Wurzer 2021 CEIPI, Strasbourg
CEIPI
Online seminar
09.12.2021
Prof. Dr. Alexander J. Wurzer
Patent protection for digital solutions
according to DIN77006/ISO56005

CEIPI: Center for International Intellectual Property Studies
- 2 -
CEIPI is the European Center of Excllency for Intellectual Propery and
international Education and Research Center for IP
European Education Center for
European Patent Attorneys
Institute of the Law Faculty at the
Excellency University Strasbourg
1.200+ Participants in CEIPI
Education Programs
European IP Institutions are Heading
the Administrative Board
TOP 50 Global Think Tank
Education in 36+ European Cities

Trends in Application of Digital Patents
- 3 -
Link to EPO study

SOURCE: INDUSTRY REPORT 2018, BLOCKCHAIN & CRYPTOCURRENCY, OCEAN TOMO
- 4 -
Trends in Application of Digital Patents: AI / Blockchain
Link: EPO patenting AI initiative
Link: WIPO patenting AI initiative
Link: Trends of patetenting blockchain technologies
Link: Trends of patenting IOTA technologies

IP Management education at CEIPI
- 5 -
▪ Course of studies
Founded in 2006 to enable the European industry to gain competitive advantage
in digital transformation
▪ Executive IP Management Days
Annual exchange of industry best practice
▪ Conferences
Interdisciplinary exchange between industry, academia and institutions to push
the development of economic benefits of IP
▪ Graduate School
Graduate school dedicated to industrial subjects with graduate students from the
industry
▪ Blog
Communication platform for customer-focused IP strategies in times of
digitization (www.ipbusinessacademy.org)
Link: University Diploma in IP management
Link : IPBusinessacademy.org
Link: Graduate School
Link: Events
Link: Master-Class in IP-Management

MIPLM Industry partner und Best Practice Case Studies
- 6 -
Link: Industry Case Studies

German Institute for Inventorship
DIN77006:06/2020
- 7 -
Link to the DIN77006

Digital Transformation – Digital Based Inventions
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Requirements according to ISO 9126 (DIN 66272)* – Additional Feature for Digital
Business Objects / ISO-IEC 27001
Quality Features for Software Products Quality Features for Digital Business
Objects
Link to the Excellence Group digital patents

- 9 -
Digital Inventions refer to generic digital objects:
(Digital) Business
Model
An abstract explanation of the way in which a company functions, i.e.
how it creates added value for its customers and does so profitably.
Cyber-physical
System
A cyber-physical system (CPS) is a system in which a mechanism is
controlled or monitored by computer-based algorithms.
User Journey
A user journey is the experiences a person has when
utilizing/interacting with something (typically software).
App
Computer program or piece of software designed for a particular
purpose that you can download onto a mobile phone or other (mobile)
device.
Eco-System/
Platform
An Eco-System is a group of businesses or business activities that
affect each other and work well together. A Platform is the digital basis
for digital services of different individuals or organizations based on a
common standard.

Notification
Appendices
Objectives
Description and
documentation of a
technological problem -
solution combination
Description, allocation and
documentation of
technological parts with a
significant role for the
customer benefit
Description and
documentation of
significant technical
relevant customer
touchpoints
Description and
documentation of the
value creation for the
customers (from IP point
of view)
Process
Activities
- Information collection
- Definition of a suitable
process model to reach
process step target
- Allocation of customer
benefit and technology
- Identification of
dominant process steps
- Description of customer
journey for involved
stakeholders
- Description of the
relevant technologies
for the business model
- 10 -
Notification
for Digital Based Invention
Objective
Integration of the digital
invention into the IP-
processes
Process Activities
Customize and enrich the
digital invention to make it
accessible to the regular IP-
process
Business Model
IP-Framework Use Case
Customer / User
Journey
Process
Step
Information Flow
Link to the EPO
conference in Dublin

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Appendices for
complete Disclosure of
Digital Based Invention
Notification
Invention Appendices: Capturing of underlying invention dependent on the digital object
development process:

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A procedural model and a digital object are interdependent with the notification process
Digital
objects
Development
process
Notification process
Invention capturing
IP protectability
Notification
Link: EPO training on IP-Design

DIN 77006 IP-Management System
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The digital invention disclosure and the related notification process are examples for
a successful establishment of a standard IP-management system
▪ Digital inventing is different:
− Those who master it (China/USA technology companies, 5G telecom companies etc.) develop
patent portfolios along use cases like developing software along "architectures".
− Those who don’t master it do not even know that they have made an invention and that it could
be protected by intellectual property rights
▪ Digital inventions are different: More abstract, broader, more aligned with the business model, use
case, etc. and not only based on the classic technicality or a technical solution
▪ Therefore, digital patents are different: Also, more abstract and not coming from physical reality or
technical functionality, the inventive idea, but rather from the application, the solution, the use case
▪ And Freedom-to-Operate (FTO) for digital solutions is different: As competition does not come from
the familiar technology or from the same product area and the solutions become more complex, the
implementation of an FTO is much more complicated or even practically impossible.
Ensuring IP compliance through a standard IP risk management is a must for digital
inventions and the protection of digital solutions

DIN 77006 - Principles
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Establishment of a standard-compliant IP management according to DIN 77006
▪ With DIN 77006 as the implementation standard of DIN/ISO
9001, the industry is provided with a guideline that will
significantly change the way IP is handled in the company
and will make it possible to adapt the quality of the IP work
to the business model operated
▪ Quality in IP management refers not only to the
implementation of IP management in all parts of the
organization and the processes to generate these results,
but also to the provision of IP services and the cooperation
with customers and suppliers
▪ This is intended to ensure the conformity of the handling of
intellectual property in order to secure business
opportunities and reduce risks in digital environments
▪ The compatibility of the standard with quality,
environmental and occupational health and safety
management systems makes it easy for companies to
integrate the requirements of the standard into the
existing organizational environment

DIN 77006 – Some Organizational Prerequisites
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The success of the IP management system depends on leadership, commitment and
involvement of all levels and functions of the company (DIN 77006 05/2020)
The implementation of the IP management system is a strategic and operational decision of an organization
and includes the following requirements:
▪ The development, management and promotion by senior management of an IP culture that
supports the achievement of IP management objectives
▪ Communication within and outside the organization
▪ The provision of the necessary resources
▪ An IP policy that is consistent with the organization's overall strategic objectives and directions
▪ The individual adjustment to the organization and integration of the IP management system into
the business processes as well as the existing management systems
▪ Effective processes to identify threats, control IP risks and maximize the benefits of IP
The IP management standard describes that processes must be identified and mapped.
However, it does not prescribe exactly how this must be done in every company

Process Model = IP Processes + PDCA Cycle
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Notification process for digital inventions is designed to be subject to the PDCA
concept according to DIN 77006:05/2020 Sec. 8.4.2 IP generation
▪ Plan
− Identifying and analyzing problems
− Search and evaluate a solution
− Select measures, describe target state
▪ Do
− Define and implement action plan
− implement the plan
▪ Check
− Measuring process and system
characteristics
− Evaluate results
▪ Act
− Commit changes
− Document and present results
− use experience
▪ IP strategy (see 5.1.2)
▪ IP risk management (see 6.1.2)
▪ IP awareness (see 7.3)
▪ IP generation (see 8.4.2)
▪ IP administration (see 8.1)
▪ IP enforcement (see 8.4.3)
▪ IP defense (see 8.4.4)
▪ IP transactions (see 8.4.5)
▪ IP reporting (see 9.3.1)
The introduction of an IP management system according to DIN 77006 does not guarantee that the organization
acts legally secure in all respects and that IP protection is necessarily improved
– Only regular audits help to meet the challenges of IP compliance
The integration of IP management into the concept of operational excellence and TQM is essential for
organizations who want to master the digital transformation
IP Processes PDCA-Cycle

IP management in the innovation process
according to ISO56005
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IP management provides a means for the organization to obtain and maintain a
dynamic core capability and to transform its innovation results into valuable IP assets.
▪ Identify opportunities (6.2)
▪ Create concepts (6.3)
▪ Validate concepts (6.4)
▪ Develop solutions (6.5)
▪ Deploy solutions (6.6)
There is no universal IP strategy to implement according to the standard - IP strategy should be flexible to adapt.
The main tasks for the integration of IP
management into innovation management are:
▪ An IP management framework
▪ An IP strategy
▪ IP management activities tailored to the
innovation process
Integration of IP into the
Innovation Processes

Patent example: Manufacturing Execution System
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Problem:
Automatic and continuous control of the production process
with regard to analysis, measurement and traceability of the
products.
Solution:
Method of producing a pharmaceutical product using a
Manufacturing Execution System (MES) and an automation
system being configured to drive and to monitor production
machines located at plant floor level, said method being
characterized in that it comprises:
• communicatively coupling said MES with said automation
system, wherein a main workflow or Main process
Instruction is created and executed by the MES when a
work order coming from an Enterprise Resource Planning
System is received by the MES, said main workflow
starting in turn a second workflow within the automation
system;
• receiving at the MES from said automation system at
least one event representative of a situation that has
occurred at the plant floor level and relative to the
machines, wherein said second workflow is sending said
at least one event to the main workflows; and
• depending on the event received at the MES starting by
the main workflow at least one event workflow within
the MES, also referred to as sub workflow, chosen
between a plurality of sub-workflows.

Patent example: Software as a Service
- 19 -
Problem:
Temporal optimization of the provision of images of virtual
machines.
Solution:
A computer-implemented method to generate a pre-
provisioned pool of virtual machines (VMs) in a networked
computing environment, comprising:
• calculating an install time for each software component
combination in a plurality of software component
combinations, the install time including an amount of
time necessary to uninstall the software components
from a partially provisioned VM of which the software
components form a subset of VM software components
and to transition the software components to a VM
having the software component combination having a
first plurality of software components from the partially
provisioned VM having a different software component
combination having a second plurality of software
components that is different from the first plurality of
software components;
• weighting each respective install time by a numerical
value that indicates a probability, with respect to other
software component combinations, that the software
component combination will be requested based on a
provisioning history;

Patent example: Platform as a Service
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Problem:
Adding transparent guidelines to a platform.
Solution:
A method for enforcing policy in a distributed computing environment
comprising a plurality of hosts, the method comprising:
• establishing (S110) a policy update of a set of components of a
platform through a namespace policy addressing syntax, wherein the
namespace policy addressing syntax references components on the
platform and is applied in policy defining configuration files;
• publishing (S120) the policy update to the set of components
associated with the referenced component namespace, wherein
publishing the policy update comprises transferring policy defining
configuration files to respective specified components subscribing to
the policy update; at the host for the set of components,
cryptographically authenticating (S130) the published policy updates;
• at the host, locally verifying (S140) policy compliance of a requested
communication by a first component of the set of components,
wherein the requested communication is directed towards at least a
second component; and
• applying (S150) results of verifying the policy compliance of the
requested communication within a communication channel flow,
which comprises routing the requested communication through the
communication channel to the second component if the requested
communication is permitted and preventing the routing of the
requested communication through the communication channel if the
requested communication is not permitted.

Patent example: Infrastructure as a Service
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Problem:
Inadequate fault monitoring and management in IaaS clouds.
Solution:
A server system comprising at least two server nodes in an Infrastructure as a
Service cloud (IaaS), each server node comprising a hypervisor and a plurality of
virtual machines (VM) at least a subset of which depend on each other to
provide a service and together defining at least one application (APP)
distributed across said at least two server nodes utilizing said IaaS cloud, each
server node further comprising:
• a cloud infrastructure monitor within the hypervisor , said cloud
infrastructure monitor comprises:
• a monitor arrangement configured for monitoring an infrastructure
of said IaaS cloud by monitoring at least one of a physical network,
storage within said physical network, the server node, or at least one
of said plurality of virtual machines (VM), and
• a detector arrangement configured for detecting faults within said
monitored IaaS infrastructure, and
• a notifying arrangement configured for providing notifications of
detected faults on a message bus;
• the server system further comprising
• a respective message bus arranged between at least two hypervisors
located in different server nodes and each said at least one
application (APP) for relaying said fault notifications from said cloud
infrastructure monitor to said at least one application (APP);
• each said at least one application (APP) is configured to
automatically manage its operation in response to received fault
notifications,
• and wherein at least one server node is connectable to an
application registry configured to store application identities for
each said at least one application, and a bus registry configured to
store a respective message bus for each said at least one application.

The Success of IP is Determined within the Market
Example: Shazam (US)
- 22 -
Bought by Apple 2017 for 400 Mio. US$
200+ Patent Portfolio
Physical product
Layer 1
Sensor and actuator
Layer 2
Connectivity
Layer 3
Analytics
Layer 4
Digital service
Layer 5
Physical
world
Digital
world
Current training programs with the IP helpdesk
of the European Commission

Der Erfolg von IP wird im Markt entschieden
Beispiele: SMA Solar technology (US)
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System for providing heat
and operating method
for such a system
EP2834573B1
Optimized load management
US9760956B2
Physisches Produkt
Ebene 1
Sensor und Aktuator
Ebene 2
Konnektivität
Ebene 3
Analytik
Ebene 4
Digitaler Service
Ebene 5
Physische
Welt
Digitale
Welt
SMA Energy System Home
▪ Connect the energy flows in the household to an intelligent
system
▪ Optimal use of the self-produced solar power
▪ Creation of a yield forecast based on an online weather forecast
and an individual consumption analysis
▪ Forecast at what times solar power will be available - and when
the right time is to turn on the washing machine

Der Erfolg von IP wird im Markt entschieden
Beispiele: John Deer (US)
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Operator assistance system
for an agricultural machine
US9707972B2
Vehicle with defined power
on demand
US9470158B2
Physisches Produkt
Ebene 1
Sensor und Aktuator
Ebene 2
Konnektivität
Ebene 3
Analytik
Ebene 4
Digitaler Service
Ebene 5
Physische
Welt
Digitale
Welt
Driver assistance system
US10653064B2
John Deere
▪ Immediate activation of new services directly from the cockpit
via the display with immediate payment

Example: Tencent (CN) + Mirriad (GB)
- 25 -
Physical product
Layer 1
Sensor and actuator
Layer 2
Connectivity
Layer 3
Analytics
Layer 4
Digital service
Layer 5
Physical
world
Digital
world
Identifying Segments
of Video Data for the
inclusion of additional
video objects
System and Method
Producing Video Data
Producing Video Data
Processing and
Apparatus
for Advertising
Component
Placement
Apparatus and
method for identifying
insertion zones
Patentstrategy for generic AI-based product placement

Example: ThyssenKrupp (DE)
- 26 -
Physical product
Layer 1
Sensor and actuator
Layer 2
Connectivity
Layer 3
Analytics
Layer 4
Digital service
Layer 5
Physical
world
Digital
world
IP-Design at thyssenkrupp with Microsoft
Benefits in the Thyssenkrupps’ value chain
▪ Immediate augmented reality demonstration at the customer's premises
→ this makes purchasing decisions quick and easy
▪ Immediate registration in the production system
▪ Fixed commitment of the installation date on site
▪ Delivery period shortened from 10 to 2 weeks
Method of planning
a platform lift
EP3612486A1
Method of planning
a platform lift
EP3691984A1

Goal of an IP Strategy:
Creating Added Value Positions with the Customer
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Sphere of exclusivity
Willingness
to pay among
markets /
customers
Customer
benefit offered
by the
competition
Competitors can
no longer place
their offer on the
market.
The customer
exclusively uses
your offer.
Strategic prohibition
creates exclusive
market positions for you.
Sphere of exclusivity
▪ Based on a distinctive customer benefit
▪ Long lasting
▪ Defensible (also legally)
Your offer
Customer benefit
meaning
Link to the textbook

IP Design in the Digital Transformation
- 28 -
Physical product
Layer 1
Sensor and actuator
Layer 2
Connectivity
Layer 3
Analytics
Layer 4
Digital service
Layer 5
Physical
world
Digital
world
Digital
Global
Physical
Local
Customer benefit
meaning
Willingness
to pay

- 29 -
Physical product
Layer 1
Sensor and actuator
Layer 2
Connectivity
Layer 3
Analytics
Layer 4
Digital service
Layer 5
Physical
world
Digital
world
Digital
Global
Physical
Local
Willingness
to pay
Customer benefit
meaning
Digital
Eco-System

- 30 -
Physical product
Layer 1
Sensor and actuator
Layer 2
Connectivity
Layer 3
Analytics
Layer 4
Digital service
Layer 5
Physical
world
Digital
world
Digital
Global
Physical
Local
Willingness
to pay
Low High
Competitive intensity
and speed
Customer benefit
meaning
Digital
Eco-System

Control of Value Positions in Business Eco Systems
- 31 -
Link: Industry Case Study Hilti Link: Industry Case Study Heraeus

Building industry 4.0 - Concremote®
32
Link to Concremote®

Building Industry 4.0
Umdasch Group Ventures / Doka
- 33 -
▪ Start small, grow big
– In 1869 Stefan Hopfwieser founds a sawmill and a
carpentry in Amstetten
– In 1958 Doka is founded in Austria
– In 1971 climbing formwork is introduced
– In 2016 Doka takes over B|A|S (now Concrefy) to digitize
the building industry
– In 2017 Umdasch Group Ventures was founded as the
Innovation Hub of the Umdasch Group
– The whole Umdasch Group has:
▪ Doka is a formwork specialist
– In 1965 introduction of formwork with just 3 components
– In 1971 climbing formwork is introduced
– Concremote® and Concrefy are the starting points in the
digitization of the building industry
Annual sales of
EUR 1,5 Mrd.
7.800
Employees
Branches in
over 170 countries
Link to Industry Case Study Doka/Umdasch

Building Industry 4.0 - Formwork
- 34 -
▪ In-situ concrete is mixied directly at the building site
▪ By the use of system form work the building process becomes industrialized the first time
▪ Trends in the digitalen transformation:
– Faster and more precise building processes
– More data from planning, building and maintanence
– More agility inside the value chain
Transformation and Trends:

Building Industry 4.0
From Formwork Specialist to Concrete Specialist
- 35 -
▪ Introduction of new busines models
▪ Continous inovation
▪ Thinking from the customer benefit and reaching a position of exclusivity
▪ Inclusion of product management, marketing and sales in the IP-Design
Umdasch Group Ventures aims at:
Improve services:
Problem
About 60% of the work on the building site does not
create value, because of defects, waiting times or
lack of coordination
Solution
Data use by Concremote® Sensors and simulation
help to find the optimal stripping point; this leads to
an increase in productivity of about 20%

Change of System Boundaries
through the Digitization
- 36 -

Development of new digital Business Models
- 37 -
Link: Case Study Präsentation of IP-Design and Business Model Development at Umdasch Venture

Digitization Patents: Principles of Inventing
- 38 -
Infrastructure for
collaboration
Integrated
system architecture
IOT for networked
abilities
Assistance systems
Data models and
simulations
Value-added
networks
Cyber-physical
systems
Success critical
information
Preference systems
Enabling humans
Horizontal
networking:
Value-added network
Vertical Networking:
Automation pyramid
Enabling objects
Data and
Information logic
Simulation- and
mapping logic
Networking logic Enabling logic
Overview MIPLM Research Projects

Taxonomy
- 39 -
Overview MIPLM Research Projects

More Information at IP business academy
- 40 -
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Patent protection for digital solutions according to DIN77006

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